A post-grant opposition period is to be re-introduced into Japanese patent law. The new procedure will allow any third party to object to the grant of a patent by the JPO on grounds of patentability, without having to follow the higher cost and more laborious route of an invalidity trial.
The previous post grant opposition period was abolished in 2003, after which patents could only be challenged by means of invalidity trials. Statistics show that the number of invalidity trials has been significantly smaller than expected, and has not reflected the number of challenges to granted patents previously filed under the opposition system. There is therefore concern that patents that would previously have been revoked now remain in force and that this fact is counter-productive for the economy.
Key points of the proposed new opposition system are as follows:
The written statement of opposition must be filed within 6 months of the date of grant as published in the patent bulletin and the official fee paid. At present, the fee is expected to be in the range of 10,000 to 20,000 Yen.
The process will be conducted entirely in writing and there is no opportunity for oral proceedings to be taken. If as a result of the opposition, the patentee is required to amend the patent, the opponent is notified however and can file further comments.
The Opposition Division will consist of 3 or 5 examiners. Examiners can raise grounds not put forward by the opponent, but cannot attack claims that were not challenged by the opponent.
Where the patent is revoked under the opposition procedure, the patentee may appeal to the IP High Court. However, if the patent is maintained, the opponent may not appeal, but does have the option of attacking the validity in a separate invalidity trial.
The Japanese Diet passed the new bill into law on 25 April 2014, but the finer aspects of the associated regulations have still to be finalised. The new system is expected to be in force in 2015.
The new system is part of wider changes to the Japanese IP system, which are intended to bring Japan more in line with other jurisdictions. Further details are found here.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.